Trademark

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Morrison & Foerster has a thriving and diverse trademark practice that includes all aspects of brand protection. Our trademark attorneys have represented numerous clients in a wide range of trademark-related matters, including:

We are pleased to have J. Thomas McCarthy, a renowned authority on trademarks and unfair competition and on the rights of publicity, as Of Counsel. Professor McCarthy, author of the well-respected McCarthy on Trademarks and Unfair Competition, consults with clients on trademark clearance and enforcement issues and advises on litigation strategy.

Trademark Registration and Counseling.

We help clients develop and protect the value of their trademarks and service marks by preparing, filing, prosecuting, and maintaining trademark applications and registrations; conducting trademark searches; working with clients to develop trademark protection strategies and to manage portfolios; negotiating trademark licenses and co-existence agreements; and handling opposition and cancellation proceedings. We have represented numerous clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board.

We work with an established network of non-U.S. counsel that handles trademark filings, oppositions, cancellations, and litigation outside the U.S. From time to time, we offer client seminars on new developments relating to trademarks. In addition, we work actively with clients to develop trademark handbooks, usage guidelines, and other educational programs to enhance trademark protection. We also help clients avoid potential infringement issues by reviewing, labeling, and marketing materials.

Transactional Activities.

Our trademark attorneys work closely with our corporate lawyers on trademark licenses, trademark due diligence, and trademark issues in connection with the formation, operation, financing, and sale of businesses. We often provide clients with strategic advice that enables them to evaluate better their intellectual property portfolios, helping them consolidate and streamline their holdings both to protect their trademarks and service marks and to reduce the costs of maintaining their portfolios.

Trademark and Domain Name Litigation.

Our litigators represent clients in all types of trade practice claims under both federal and state laws: trademark, service mark, and trade dress infringement, and dilution, unfair competition, counterfeiting, cybersquatting, and unfair advertising cases. In addition, we have represented many clients in disputes involving infringing Internet domain names and cybersquatting through ICANN’s arbitration procedures.

Anti-Counterfeiting Advice.

We advise technology and entertainment clients on counterfeiting and customs issues and have obtained ex parte writs of seizure for counterfeit parts and labels in the U.S. and other countries. We work closely with clients to develop global enforcement and anti-counterfeiting programs and strategies to aid in the worldwide protection of trademarks and service marks.

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